Thursday, June 30, 2011
If you're applying surface ornamentation to a shoe, (imagery like this, that is considered separable from the footwear) your best protection is probably copyright law because it's automatic and because you can stop others from reproducing the image on anything, not just shoes. You should register the work if you're concerned about it being ripped off because copyright registration provides some advantages in a lawsuit. You can register all your designs as a group but if one of your designs is more popular than the others, you should probably register it separately. You can find help online, and if you need more assistance, check out our book, The Craft Artists' Legal Guide.
Protecting the shoe's design. If you want to stop the specific use of your image in connection with shoes, (or for some reason you want to protect the design of the shoe itself -- the shape, proportions and "sculptural" elements), you might consider filing a design patent. Design patents protect shape, design and ornamentation for useful objects. Companies with large design patent portfolios, such as Nike, successfully use design patents to stop others from making similar shoe designs. We discussed the differences between copyright and design patents in a recent post. The big difference is that design patents are more expensive and take longer to acquire.
PS Good news for those who can't find what they want at Zappos: design your own shoes.
Wednesday, June 29, 2011
As a General Rule Dept. Signing an assignment for the “promise” of future payments always involves a risk. We used to have a client whose golden rules were, "Get as much as you can before signing the deal," and "Don't give any money back." One reason to get the money upfront is that if the assignee (the person who owes you the money) fails to pay you, you may be trapped in dispute resolution, fighting to get your copyright back. If the assignee insists on a series of payments, there are several solutions, such as establishing an escrow account, transferring partial assignments per payment, or setting up a license agreement that allows for ownership transfer after the final payment. This is a situation where you should consider contacting an attorney (and we hope your assignment agreement has an attorney fees provision).
Tuesday, June 28, 2011
Monday, June 27, 2011
Right you had a question. Yes, you are free to use the photo of the conduits. Rules about trademarks in photos only apply if a company's trademark or trade dress or some other visual identifier is visible in the photo. Even if a trademark is visible in the photo, you can still use it without permission for informational purposes such as your instructional manual. (You can even caption it as originating from Sam's Club.) You will of course need the permission of the photographer (unless the photographer is your employee or has signed a work made for hire agreement). There's also the (very) outside possibility that the electrical wiring contains a trade secret -- that is, the manner in which Sam's Club wires its buildings provides an advantage over competitors. Even if that's the case, it should not be a problem for you as the store manager has permitted the photograph; it wasn't done surreptitiously.
Friday, June 24, 2011
|no shoes, no shirt;|
no fair use defense
The Court of Appeals Decision. On appeal, the Third Circuit reversed. More discovery was needed to decide the defamation claims (the tapes of the show had been destroyed). The Third Circuit also blew off any fair use defense. Posting the original photo and encouraging listener modifications was a purely commercial use and carried no additional transformative message. For those keeping score, all four fair use factors weighed against the station.
Removal of the credit. The most interesting claim was the argument that the DMCA prohibited the removal of copyright management information (CMI), which includes digital identifying information such as the name of the author. The Third Circuit ruled that the "gutter credit" qualified as CMI and cutting it off the photo violated the DMCA.
Takeaway Dept. In this case, someone physically cut off the photo credit, scanned the photo and posted the digital result, something not many people anticipated would trigger a DMCA claim. Does this mean that you must always include a photo credit when you reproduce a photo? Not necessarily; it just means you cannot remove an existing credit. This issue may become more confusing if the credit is not adjacent on the printed page, perhaps something that other cases will decide. For now, gutter credits qualify as CMI, at least in the Third Circuit.
Thursday, June 23, 2011
|Participants in San Francisco's |
Bay to Breakers Race/Party
Right, you had a question(s). Photographers can reproduce and sell copies of photos of people in publicly viewable situations like street fairs. Newspapers and websites can reproduce those images if the pictures are used for "informational" purposes. But an advertiser can't use the same images of people to sell products or services if the person in the ad is clearly recognizable. That's because the advertising use implies that the person endorses or is somehow associated with the product.
Can you use a blanket release? Posting a sign may help your claim and it could be sufficient to use the photos to promote the street fair. But it probably doesn't meet the standards of a model release contract required for most commercial advertising uses. That's because the street fair participant doesn't really have an opportunity to assent to or to reject the release (something that is much easier to do if people have to pay for the tickets). Your present opt-out is for the participant to tell the photographer, 'No.' But what if the participant isn't paying attention when the photo is taken and doesn't notice the photographer? Our suggestion is that if you take a photo and feel certain it would make for a good commercial use, use a short business card-sized release. (Here's some detailed information by the Dear Rich Staff on when and how to use model releases, and here's more on the right of publicity.)
Wednesday, June 22, 2011
Tuesday, June 21, 2011
Newton: A Lawsuit Over the Musical Composition. In Newton (the case involving the Beastie Boys' use of a James Newton flute sample), the Beasties paid for a license to use the sound recording, but they did not obtain a license to use Newton's underlying composition. When Newton sued, the court ruled that the borrowing of the composition was de minimis (too small to matter).
Bridgeport: A Lawsuit Over a Sound Recording. In Bridgeport (in which a film company used a George Clinton/Funkadelic song sample in a movie soundtrack), the defendants were sued solely over the failure to obtain the sound recording license. The court asked the same question as you, and answered as follows:
"[This case] raises the question of why one should, without infringing, be able to take three notes from a musical composition, for example, but not three notes by way of sampling from a sound recording. Why is there no de minimis taking or why should substantial similarity not enter the equation. Our first answer to this question is what we have earlier indicated. We think this result is dictated by the applicable statute. Second, even when a small part of a sound recording is sampled, the part taken is something of value. No further proof of that is necessary than the fact that the producer of the record or the artist on the record intentionally sampled because it would (1) save costs, or (2) add something to the new recording, or (3) both. For the sound recording copyright holder, it is not the "song" but the sounds that are fixed in the medium of his choice. When those sounds are sampled they are taken directly from that fixed medium. It is a physical taking rather than an intellectual one."Mental, eh? Unfortunately for musicians the takeaway is that based on Newton and Bridgeport, all sampling of sound recordings requires permission, whereas some sampling of compositions is excusable. We can't say we agree.
Monday, June 20, 2011
Friday, June 17, 2011
High quality vs. consistent quality. The trademark owners claimed they didn't need to supervise or maintain quality control because the bridal gowns at the store were of the same high quality (and from the same suppliers) as the other Eva's Bridal shops. In other words, quality control wasn't necessary because the store's goods were of high quality. The court responded that it wasn't "high" quality that was demanded; it was consistent quality -- for example, the kind of supervision that guaranteed the dressing rooms were clean and that the customer experience was consistent across the franchise. As the judge stated (cites omitted):
The trademark's function is to tell shoppers what to expect—and whom to blame if a given outlet falls short. The licensor's reputation is at stake in every outlet, so it invests to the extent required to keep the consumer satisfied by ensuring a repeatable experienceTakeaway Points Dept. A trademark license agreement should contain language assuring quality control and permitting the trademark owner to inspect products and services -- for example, many toy licensors require pre and post production samples. In addition, the trademark owner of a franchise operation, should perform personal inspections to guarantee consistency. (BTW, some other recent naked licensing cases are discussed here.)
How many times was the word naked used in the decision? On a Beavis and Butthead level, we counted three times (and we are hoping that word drives some additional organic searches to our blog).
Thursday, June 16, 2011
Backstory. Righthaven is co-owned by an attorney and members of the family that also owns Stephens Media (which owns the LasVegas Review-Journal). According to this website, Righthaven's business model is "finding infringing content online, obtaining the rights to copyrighted content, registering the copyright with the U.S. Copyright Office, and then filing a copyright infringement lawsuit." (That's also a rough description of a copyright troll). Righthaven has filed over 140 lawsuits based on material excerpted from the Las Vegas Review-Journal.
The Big Problem. Righthaven made a deal with Stephens Media whereby they obtained the right to sue over infringed articles. Assigning the "right to sue" won't fly under copyright law (it's technically referred to as the "bare assignment of an accrued cause of action" and according to this case, is impermissible). The judge in the Righthaven case seemed pretty ticked off by the last minute revelations from the so-called "assignment" so you may see sanctions along with an award of attorney fees to the defendant. It's too early to see whether other cases will be dismissed (Righthaven can still appeal this decision), but if we were a betting blog, we'd bet on the defendants in those 140+ cases. As for those who already ponied up a settlement, that's a more challenging call. Setting aside settlements will likely require that the defendants prove that they were fraudulently induced into settlement. Some of the settlers are apparently considering a class action.
Wednesday, June 15, 2011
Right you had a question. Legal title to an invention is a matter of state law, not federal law. In California, if you filed your patent at the time you were married, a court will presume that your spouse shares an undivided half of your interest (that is, your spouse is co-owner of legal title to the patent). That rule was confirmed in a recent case. To avoid confusion and to be assured that your assignment is complete (and your spouse will not later dispute the assignment), you should include a provision in your assignment similar to the one below. This provision protects the assignee (person acquiring the rights to the invention) from later being sued by the spouse of the inventor. When used in assignments, it usually appears below the signature line for the inventor. (BTW, this provision is not required in license agreements.)
Sample Provision for Spousal Assignment
I am the spouse of Assignor and I acknowledge that I have read and understand this Assignment agreement. I am aware that my spouse agrees to assign his/her interest in the Invention, including any community property interest or other equitable property interest that I may have in it. I consent to the assignment and agree that my interest, if any, in the Invention is subject to the provisions of this Agreement. I will take no action to hinder the Agreement or the underlying assignment of rights.Spouse’s signature
Tuesday, June 14, 2011
Monday, June 13, 2011
What's the diff? The rights you get with a design patent are considered to be broader or more powerful than a copyright. That's because you don't need to prove that an infringer saw your work and copied it -- all that matters is the works are the same. But that advantage may prove more valuable for big companies with a lot of money to obtain the design patent and to enforce it. The design patent application and filing process can take a year or more and cost one-two thousand dollars. A copyright is automatic -- it exists once you create the work -- and registration, which provides benefits if you need to chase someone, typically takes three to six months and costs under $50. Copyright will last for your life plus 70 years; a design patent lasts for 14 years. In addition, there are many rules for design patents that could disqualify it as an option for you. For example, if your design has been offered for sale or images of it have been published more than a year ago (referred to as the one-year rule), you cannot now file for a design patent. Not all designs are protected under design patent law. The USPTO will not issue design patents for 'surface ornamentation' (i.e. two-dimensional illustrations such as drawings). So, if you're only decorating the surface of an object, you may not qualify. For all these reasons, we'd suggest passing on design patent protection. By the way, we've putting together a website explaining design patent basics ... check it out at www.mydesignpatent.com.
Friday, June 10, 2011
The Backstory. Microsoft was sued for patent infringement by i4i, a Canadian company. i4i's pursuit eventually forced Microsoft to disable an XML feature of Word (which ended up making it more confusing and time-consuming for the Dear Rich Staff to convert text into eBooks). Microsoft had been offered a chance to license the patent before the case blew up but passed perhaps believing that the patent would be proven invalid. At trial, Microsoft argued that i4i failed to disclose a prior invention that might have invalidated the application (a principle known as the 'one-year rule'). The jury was instructed that the patent could only be invalidated if there was "clear and convincing" evidence of invalidity. Microsoft and many other tech companies wanted the court to use the lower standard of "preponderance of the evidence" which would make it easier to invalidate many of the iffy patents used by non practicing entities.
But it didn't happen. The justices refused to change the standard, proving that the Court isn't slavishly pro-business or anti-Canadian. The Court threw one small bone to troll victims: they could tell juries about any evidence that hadn't been considered by the patent office -- like the facts Microsoft had advanced about i4i's patent.
Bottom line: Tech companies will need to petition Congress for a change (unlikely) and big Pharma is happy with the decision.
Thursday, June 9, 2011
Right, you wanted to hear about a Supreme Court case. Last week, the Supreme Court decided Global-Tech Appliances v. SEB. SEB patented a deep-fryer whose exterior was cool to the touch. Global-Tech Appliances, operating outside the U.S. copied everything but the cosmetic aspects of the SEB deep fryer. Global-Tech then branded these deep fryers for sale by Sunbeam, Montgomery Ward, and others. SEB sued Global-Tech for inducing others to infringe its cool-touch patent. Global-Tech defended itself by arguing that it couldn't induce others to infringe because it had no actual knowledge it was infringing SEB's patent. (Global-Tech had vetted its device with a patent attorney but had failed to disclose to the attorney that their device was copied directly from the SEB deep-fryer.)
Justice is (Willfully) Blind. The Supreme Court ruled for SEB. Yes, said the court, inducing infringement required knowledge of the existing patent, but that knowledge could be inferred using a legal standard referred to as "willful blindness." As the Court stated:
Many criminal statutes require proof that a defendant acted knowingly or willfully, and courts applying the doctrine of willful blindness hold that defendants cannot escape the reach of these statutes by deliberately shielding themselves from clear evidence of critical facts that are strongly suggested by the circumstances.The Court went on to distinguish willful blindness from a lower court's standard known as "deliberate indifference." As for the differences, we won't go into all the details, but practically, the bottom line is that when asking an attorney to render a legal opinion (Does my deep-fryer infringe?), don't hide information (like, 'I copied this from another deep-fryer').
Wednesday, June 8, 2011
What Happened? In a case involving Stanford University and the Roche pharmaceutical company, the Court was faced with two agreements signed by a university scientist: one in which he promised to assign rights to the university; and another in which he actually assigned rights to a company that was later purchased by Roche. The Supreme Court ruled that the agreement in which rights were actually assigned took precedence over the agreement in which rights were promised.
The Bayh-Dole Act. Stanford's position was that the inventor's rights automatically vested in the university under the Bayh-Dole Act. The Bayh-Dole Act, enacted in 1980, permits universities to claim patent rights in inventions created with federal funding at a university. The university may then license these discoveries to private industry—a practice some critics have likened to corporate welfare. Curiously, one of the prerequisites for the university to claim these rights is that the university must have written agreements with its faculty and technical staff requiring disclosure and assignment of inventions. The ruling won't invalidate past assignments. But problems may occur in cases like this one, where two assignments appear to conflict. In addition, you can expect that universities will stop using language in which inventors promise to assign and instead automatically assign inventions. That seems like a silly distinction to the rest of the world but there has to be some justification for patent lawyer fees.
Tuesday, June 7, 2011
Monday, June 6, 2011
- The company gives the rights back voluntarily. If you are still on good terms with the company, it's possible they may work something out with you. They may even allow you to exploit the software in return for a cut of your profits. Or perhaps they'll simply sell it back at a reduced price. You won't know until you ask. And whatever you agree upon, get it in writing, of course.
- The agreement you signed provides for some method of reversion. Occasionally, an assignment provides for reversion of rights. This is rare because assignments, by their nature, are permanent transfers. But occasionally, a patent or a copyright assignment permits the assignor to re-acquire rights if certain conditions are met -- for example, the assignee stops exploiting the work, or the assignor buys it back for an agreed-upon fee. In any case, you should review the agreement in case it does include a reversion provision. (By the way, there may be confusing tax implications if an assignor reclaims rights after categorizing the assignment payment as capital gains and not as ordinary income.)
- The employer breached the assignment agreement and you can use that breach as the basis for terminating the assignment. We're not sure if you're ready for this approach as it usually involves litigation, but if you can prove a material breach of the assignment agreement, the rights may be re-assigned to you. You're most likely to achieve this outcome if you can demonstrate that the company induced you to enter the agreement based on fraud. You may also be able to argue that the company materially breached the agreement and failed to cure the breach -- for example, never paid royalties or provided accountings. But this is a tough strategy to implement because a court faced with a failure to pay royalties may allow the company to retain the ownership, provided that damages are paid to the assignor (you).
Keep in mind that if you do get the rights back, you'll also need the cooperation of the company in registering the assignment (whether it is copyright or patent rights) and in transferring rights back to you.
Friday, June 3, 2011
Thursday, June 2, 2011
Dear Rich: I am trying to find out if I could use a specific quote from the show, Strangers with Candy, for a potential blog title? If it helps, the potential title is "Stupid Junky Whore" which is a recurring insult on the aforesaid series. Oops, we didn't have time to post a warning that portions of the clip shown above may be offensive to some readers. So much for our bounce rate (or is it exit rate?).
Right, you had a question. If you're in a hurry to get started with your blog, the short answer is that there's no problems with naming it, 'Stupid Junky Whore.' We'll pass on providing the long answer but if we did provide one, we'd probably say things about copyright not protecting short phrases and how your choice of phrase hasn't achieved trademark status, and how free speech gives you the right, etc. But why get into that. As Jeri would say, 'Dreams can happen!'
Wednesday, June 1, 2011
|click to see gruesome details|
Right, you had a question. As much as the Dear Rich Staff supports the right of New Jersey county officials to hassle public access TV shows, we think the matter is moot (as the lawyers like to say) because the USPTO killed the county's trademark application last week. We have to agree with the trademark examiner who rejected the trademark application on October 18, 2010. She wrote:
Registration is refused because the applied-for mark consists of an insignia of a U.S. municipality. Trademark Act Section 2(b), 15 U.S.C. §1052(b); see TMEP §1204. Trademark Act Section 2(b) bars registration of marks that include the flag, coat of arms, or other insignia of the United States, any state or municipality, or any foreign nation. TMEP §1204.You can read the complete rejection here. The County had six months to respond. We guess their tickler system malfunctioned because last week the trademark application was officially pronounced as abandoned. Here's the notice of abandonment. That's $325 in taxpayer money (not to mention county counsel expenses) down the drain! And in any case, even if the County has a protectible but unregistrable trademark, the TV show use is permitted under First Amendment principles.